Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites a product in a particular use which renders the claim indefinite as to whether the product (the adhesive of the preamble) or the use of the adhesive in a particular endeavor required by the claim. Examiner recommends amending the claim to recite the language of Claim 8 of the parent application which matured into U.S. 12,281,242: “The adhesive of Claim 1, wherein the adhesive is capable of bonding a castable urethane to a substrate.”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Agag (WO2017053402) as evidenced by Teschendorf (U.S. 5,266,611) in view of Kuwahara (US20200024493 – priority to JP2018134826 – English translation provided).
Agag exemplifies adhesive compositions with phenoxy resin and MDI-uretdione, zinc acetylacetonate and cyclohexane (¶[0081]).
Catalyst is not required even though exemplified as there are exemplified adhesives without catalyst. See ¶[0084] or ¶[0106] for instance. Therefore, it is obvious to practice the invention of Agag, in particular the above example, without the catalyst as Agag teaches this is optional. This reads over Claim 10.
Agag exemplifies and generally teaches phenoxy resin which is carboxylated phenoxy resin in water (PKHW-35) (¶[0044]) Agag does not teach the carboxylation is grafted nor based on methyl methacrylate or methacrylic acid as recited by the common technical feature.
Teschendorf provides evidence in Column 6 lines 20-30 that PKHW-35 is a phenoxy resin grafted with one or more methacrylate or methacrylic acid.
The above example of ¶[0081] does not teach or suggest the phenoxy resin that is used. It would have been obvious to a person of ordinary skill in the art at the time the invention was filed to practice the invention of Agag, in particular that of the example of ¶[0081], with PHKW-35 because Agag teaches the use of such resin in ¶[0044].
The PHKW-35 resin reads over the phenoxy grafted resin of Claim 1.
With respect to the silanes listed by Claims 1-4, Agag teaches allyl methoxy silane in the composition but does not teach a silane as recited by Claim 1-4.
Kuwahara, working in the field of adhesives based on phenoxy resins similar to Applicant and Agag, teaches the use of silane coupling agents including vinyl trimethoxy silane and 3-glycidoxypropylmethyldiethoxysilane and 3-glycidoxypropyltrimethoxysilane. (¶[0073] in US Document / ¶[0037] in JP2018134826 priority document translation provided) The vinyl trimethoxy silane of Agag is considered to be equivalent to allyl methoxy silane as the silane is reasonably suggested to have extra methoxy groups (to be trimethoxy) and complete the silane and vinyl is a related group to allyl. Therefore, one of ordinary skill in the art is reasonably suggested the allyl methoxy silane, which Agag does not teach any purpose or function, must be related to vinyl trimethoxy silane known to be used in adhesive compositions.
As such, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Agag as discussed above by substituting 3-glycidoxypropylmethyldiethoxysilane or 3-glycidoxypropyltrimethoxysilane for the allyl methoxy silane as Kuwahara teaches these compounds are silane coupling agents used in phenoxy adhesives and are functionally equivalent, as in serving the same function in the adhesive compositions. This represents the simple substitution of known prior art elements, known silane coupling agents, for the predictable result of an adhesive with more adhesive strength due to the addition of a silane coupling agent.
The 3-glycidoxypropylmethyldiethoxysilane reads over the epoxy silane of Claim 1, Claim 2, Claim 3 and the 3-glycidoxypropyltrimethoxysilane read over Claim 4.
Cyclohexane as above reads over Claim 5 and Claim 6.
The MDI-uretidone reads over Claim 7.
The adhesives are one part formulations reading over Claim 11. See also ¶[0014].
Claim 12 is read over by the above modified adhesive of Agag without catalyst and with 3-glycidoxypropyltrimethoxysilane. Further, the uretidone exemplified is not required by Agag. See ¶[0017]. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Agag, in particular that of ¶[0081], such that the uretdione is not present because Agag teaches it is optional in ¶[0017].
Therefore, the only components of the above modified composition are the PHKW-35, the 3-glycidoxypropyltrimethoxysilane/3-glycidoxypropylmethyldiethoxysilane epoxy silanes and the cyclohexane carrier solvent. This reads over the consisting of language of Claim 12.
Claims 13 and 14 are future intended uses of the adhesive of Claim 1. There is nothing of record to suggest the adhesive of Agag cannot be used to bond casted urethane nor against metal substrates. Agag even exemplifies stainless steel substrates (¶[0088]) as an example of a rigid substrate and teaches the adhesive are used for bonding elastomers (urethanes ¶[0009]). This reads over the limitations of Claim 13 and Claim 14.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8-9 of U.S. Patent No.12,281,242. Although the claims at issue are not identical, they are not patentably distinct from each other because they constitute an obvious variant of the claims of 12,281,242 for the reasons outlined below.
Claim 1 of 12,281,242 recites the limitations of instant Claim 1 but for the requirement the silane be an amino silane, epoxy silane, mercapto silane and/or isocyanato-silane.
Claim 2 of 12,281,242 recites the silane is specifically 3-glycidoxy propyl trimethoxy silane along with other limitations for Claim 2 of 12,281,242’s variant of the invention of Claim 1 of 12,281,242.
It would have bene obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 1 of 12,281,242 using the specific variant of Claim 2 of 12,281,242 as the base adhesive because 12,281,242 recites this variant of the adhesive of Claim 1.
This reads over instant Claim 1, Claim 2, Claim 3, Claim 4, Claim 7, Claim 8, Claim 10, Claim 11, Claim 12.
Claim 3 of 12,281,242 depends from Claim 1 of 12,281,242 and therefore would now comprise Claim 1 and Claim 2 of 12,281,242. These limitations read over instant Claim 5 and Claim 6.
Claim 8 and 9 of 12,281,242 depends from Claim 1 of 12,281,242 and therefore would now comprise Claim 1 and Claim 2 of 12,281,242. These limitations read over instant Claim 13 and Claim 14.
Allowable Subject Matter
Claim 8 would be allowable upon resolution of the non-statutory double patenting rejections of record.
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art is Agag (WO2017053402) which teaches the MMA/MAA phenoxy resins with uretdione / silane as recited but fails to teach or suggest the use of the blocked hexamethylene in addition to the MDI-uretdione of Agag. Agag specifically teaches only dimeric MDI-uretdiones in ¶[0038] and there does not appear to be any teaching of suggestion as to motivate one of ordinary skill in the art to practice Agag with a polymeric version of the dimeric MDI-uretdione even though it is known without the use of hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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